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Muller-Moore, Robert (drichardson@tgrvt.com) U.S. TRADEMARK APPLICATION NO. 85412053 - EAT MORE KALE N/A 3/27/2012 3:38:41 PM ECOM108@USPTO.GOV

Attachments: Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

APPLICATION SERIAL NO. MARK: EAT MORE KALE

85412053

*85412053*
CLICK HERE TO RESPOND TO THIS LETTER:
http://www.uspto.gov/trademarks/teas/response_forms.jsp

CORRESPONDENT ADDRESS: DANIEL P. RICHARDSON, ESQ. TARRANT, GILLIES, MERRIMAN & RICHARDSON PO BOX 1440 MONTPELIER, VT 05601-1440 APPLICANT: Muller-Moore, Robert

CORRESPONDENT’S REFERENCE/DOCKET NO: N/A CORRESPONDENT E-MAIL ADDRESS: drichardson@tgrvt.com

OFFICE ACTION STRICT DEADLINE TO RESPOND TO THIS LETTER
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE: 3/27/2012 Upon further consideration of the application, the following has been determined: The assigned trademark examining attorney has reviewed the referenced application and has determined

the following: SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – CLASS 025 AND 040 Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2062809, 2197973 and 2538050. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations. Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 136162, 177 USPQ at 567. Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis. The marks are compared for similarities in their appearance, sound, connotation and commercial impression. TMEP §§1207.01, 1207.01(b). The goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Herbko Int’l, Inc. v. Kappa Books, Inc. , 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi). In the case at hand, applicant seeks registration of “EAT MORE KALE” in standard characters for “Hooded sweat shirts; Infant and toddler one piece clothing; Long-sleeved shirts; Shirts; Shirts and shortsleeved shirts; Shirts for infants, babies, toddlers and children; Snap crotch shirts for infants and toddlers; Sweat shirts; T-shirts; T-shirts for men, women, infants, toddlers, and children; Tee shirts; Wearable garments and clothing, namely, shirts; Women's clothing, namely, shirts, dresses, skirts, blouses(Based on Intent to Use) Turtle neck shirts; Yoga shirts” and “Imprinting of decorative designs on T-shirts The cited marks in Registration Nos. 2062809, 2197973 and 2538050 is “EAT MOR CHIKIN” in typed form and with a design element for “clothing, namely, T-shirts and sweatshirts;” “clothing, namely, hats, neckties, shirts, sweatshirts and T-shirts” and “Clothing, namely, hats, neckties, shirts, sweatshirts and Tshirts” respectively. Comparison of the Marks Regarding the first part of the test, applicant’s mark is highly similar in connotation and commercial impression to registrant’s mark because all the marks are constructed with the wording “EAT MORE. Regarding the issue of likelihood of confusion, applicant should consider the following: The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source. In re West PointPepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b). For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression. See

Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b). Consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). In addition, marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n , 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii). Here, the first words of all the marks at issue are “eat more.” Comparison of the Goods If the goods and/or services of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b). Both the applicant and the registrant in this instance are providing essentially the same goods, namely, clothing, and services featuring clothing (imprinting decorative designs on t-shirts). Therefore, with the contemporaneous use of highly similar marks, consumers are likely to reach the mistaken conclusion that the goods and goods and services are related and originate from a common source. As such, registration must be refused under Trademark Action Section 2(d). Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. Requirement Maintained and Continued Specimen refusal: See Office Action dated December 18, 2011.

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must

continue to submit certain documents online using TEAS, including responses to Office actions. See 37 C.F.R. §2.23(a)(1). For a complete list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

/Caryn Glasser/ Trademark Examining Attorney LO Office 108 Phone: (571) 270-1517 Fax: (571)-270-2517 caryn.glasser@uspto.gov (informal) TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail. All informal e-mail communications relevant to this application will be placed in the official application record. WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response. PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-7869199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/. TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/teas/eTEASpageE.htm.

To: Subject: Sent: Sent As: Attachments:

Muller-Moore, Robert (drichardson@tgrvt.com) U.S. TRADEMARK APPLICATION NO. 85412053 - EAT MORE KALE N/A 3/27/2012 3:38:43 PM ECOM108@USPTO.GOV

IMPORTANT NOTICE REGARDING YOUR U.S. TRADEMARK APPLICATION
USPTO OFFICE ACTION HAS ISSUED ON 3/27/2012 FOR SERIAL NO. 85412053
Please follow the instructions below to continue the prosecution of your application:

TO READ OFFICE ACTION: Click on this link or go to http://portal.uspto.gov/external/portal/tow and enter the application serial number to access the Office action. PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification. RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 3/27/2012 (or sooner if specified in the office action). Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses. Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form. HELP: For technical assistance in accessing the Office action, please e-mail TDR@uspto.gov. Please contact the assigned examining attorney with questions about the Office action.

WARNING
Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.

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